Ex parte SAWAGATA

Board of Patent Appeals and Interferences

Jul 9, 1998

08075338 (B.P.A.I. Jul. 9, 1998)

Application for patent filed June 11, 1993. According to1
the appellant, this application is a continuation of Application
07/958,469, filed October 8, 1992, now abandoned; which is a
continuation of Application 07/823,613, filed January 17, 1992,
now abandoned; which is a continuation of Application 07/355,344,
filed May 23, 1989, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KIYOSHI SAWAGATA

_____________
Appeal No. 95-2855
Application 08/075,3381
______________
HEARD: June 10, 1998
_______________
Before JERRY SMITH, BARRETT and CARMICHAEL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
Appeal No. 95-2855
Application 08/075,338
2
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1-11, which constitute
all the claims in the application.
The disclosed invention pertains to a video signal
reproducing apparatus. Specifically, the invention is directed
to the rapid identification and synchronization of the output of
a video tape recorder (VTR) to specific frames of the recorded
video signal which have been externally supplied. A plurality of
successive frames near the desired frame are simultaneously
stored in a shift memory. The time code of a desired frame is
compared to the time codes of the plurality of stored frames, and
the memory holding the corresponding frame of video data is
selected for output.
Representative claim 1 is reproduced as follows:
1. A video signal reproducing apparatus for reproduction
of a video signal recorded on a recording medium in synchronism
with a reference time code signal supplied from outside said
apparatus wherein a time code signal is also recorded
corresponding to each frame or field of the video signal, said
apparatus comprising:
first reproducing means for sequentially reproducing the
video signal from said recording medium;
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Application 08/075,338
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memory means having a plurality of storage areas for
storing a respective plurality of frames of the video signals
sequentially reproduced from said recording medium;
second reproducing means for reproducing the time code
signal from said recording medium;
time code comparing means for comparing the time code
signal reproduced by said second reproducing means with the
reference time code signal supplied from outside, thereby
generating a control signal; and
reading control means for controlling said memory means
and selectively and sequentially reading frames of the video
signal one after another from only one storage area of said
memory means in accordance with the control signal so that the
time code signal corresponding to the frame of the video signal
read from said one storage area of said memory means is
synchronized with the reference time code signal.
The examiner relies on the following reference:
Ichinose 4,612,569 Sep. 16, 1986
Claims 1-11 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based on an inadequate disclosure. Claims 1-
11 also stand rejected under 35 U.S.C. § 103. As evidence of
obviousness the examiner offers Ichinose taken alone.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments in
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Application 08/075,338
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support of the rejections and the evidence of obviousness relied
upon by the examiner as support for the obviousness rejection.
We have, likewise, reviewed and taken into consideration, in
reaching our decision, the appellant's arguments set forth in the
briefs along with the examiner's rationale in support of the
rejections and arguments in rebuttal set forth in the examiner's
answers.
It is our view, after consideration of the record before
us, that the disclosure in this application does provide support
for the claimed invention in a manner which complies with the
requirements of 35 U.S.C. § 112. We are also of the view that
the evidence relied upon and the level of skill in the particular
art would not have suggested to one of ordinary skill in the art
the obviousness of the invention as set forth in claims 1-11.
Accordingly, we reverse.
We consider first the rejection of claims 1-11 under the
first paragraph of 35 U.S.C. § 112. For purposes of this
rejection, the claims stand or fall together as a single group
[brief, page 6]. With respect to representative independent
claim 1, the rejection focuses on the “reading control means.”
According to the examiner, the original specification does not
provide support for the newly added limitation of the reading
Appeal No. 95-2855
Application 08/075,338
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control means [answer, page 4]. A rejection on this basis is
directed to the written description requirement of the first
paragraph of 35 U.S.C. § 112.
The purpose of the written description requirement is to
ensure that the applicant conveys with reasonable clarity to
those skilled in the art that he was in possession of the
invention as of the filing date of the application. For the
purposes of the written description requirement, the invention is
"whatever is now claimed." Vas-cath, Inc. v. Mahurkar, 935 F.2d
1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). It is the
position of the examiner that the original specification supports
the reading of a single frame of data from one of the storage
areas of the memory means, but the original specification does
not support the sequential reading of frames of data from the
single storage area as now recited in the claims. Appellant
argues that there is clear support in the original specification
for this claimed operation. We agree with appellant on this
issue for the reasons which follow.
The invention is described as an improvement on the
conventional technique for synchronizing playback of a VTR to a
desired frame of the recorded video signal. In the prior art a
tape is driven to the vicinity of the desired location, is caused
Appeal No. 95-2855
Application 08/075,338
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to overrun this location by a preroll amount, and is stopped
[specification, page 3]. It typically happens that the tape is
not stopped at precisely the location of the desired frame of
video data. The tape is then played until the actual desired
frame is detected [Id.]. According to appellant, the time it
takes to locate this desired frame could be up to five seconds or
so [Id., page 4]. The invention seeks to reduce this period of
time for synchronizing the playback of video data to the desired
frame of data.
The invention achieves this goal by storing a plurality
of successive frames of data which are known to exist around the
desired frame of data. The invention can quickly compare a time
code of the desired frame of video data with the time codes of
each of the stored plurality of successive frames of data. Thus,
since the desired frame of data is already stored in one of the
storage areas, the desired frame of data can be immediately
output when desired.
The question to be resolved is whether there is any
indication from the original specification that the inventor ever
considered reading out more than the first desired frame of data.
Appellant argues that the memories 14-1 to 14-i clearly store
successive frames of the video signal [brief, page 8]. We agree
Appeal No. 95-2855
Application 08/075,338
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with this statement, but this argument misses the point. Even
though memories 14-1 to 14-i are disclosed as being filled with
successive frames of data after the data is stored in the memory,
the availability of this data does not require that more than one
frame of data be output.
Of more importance to the issue before us is the
operation shown in Figures 2 and 3 of the application and
described in the specification. Figure 3 shows the prior art
synchronization operation wherein synchronization is not obtained
between the preroll point t0 and the lock-in point t1. After
synchronization is achieved at point t1, the graph shows the time
codes linearly changing with time as the tape continues to play.
Figure 2 shows the operation of the invention. It can be seen
there that a start signal Vs occurs before lock-in point t1, and
one of the memories is selected as the memory holding the desired
frame of data. Although each of the memories in Figure 2 is
shown as continuing to linearly output time code data with
respect to time, only one of the memories has been selected by
the comparator of Figures 1 or 4. Once the comparison is made by
comparator 12, a single one of the memories is selected for read
out of the video data.
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Application 08/075,338
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Once synchronization has been achieved, frames of data
continue to be played as shown by the graph of time codes versus
time in Figure 2. Because there is synchronization, and because
there is only one memory enabled by the comparator, the
additional synchronized playback of frames of data indicated by
the graph of Figure 2 would have to come from the same memory
which has already been selected. In other words, once the memory
holding the starting frame of data has been determined,
synchronization thereafter is maintained by selecting the output
of that particular memory as shown in Figure 2.
As we noted above, the question is whether the original
specification conveys that appellant was in possession of the
invention now being claimed at the time the first application was
filed. It is clear from the original specification, for reasons
discussed above, that the original specification expected that
playback of a videotape would continue after synchronization was
obtained. It is clear from the original specification that the
invention picks one of the memories 14-1 to 14-i for playing back
frames of data which are synchronized to the desired playback of
the data recorded on the videotape. Therefore, we agree with
appellant that the original specification does provide support
for the invention now being claimed. Accordingly, we do not
Appeal No. 95-2855
Application 08/075,338
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sustain the rejection of claims 1-11 as failing to comply with
the written description requirement of the first paragraph of 35
U.S.C. § 112.
We now consider the rejection of claims 1-11 under 35
U.S.C. § 103 as being unpatentable over Ichinose. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the examiner
to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). In so doing, the examiner is expected to
make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art would
have been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason must
stem from some teaching, suggestion or implication in the prior
art as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hospital
Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221
Appeal No. 95-2855
Application 08/075,338
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USPQ 929, 933 (Fed. Cir. 1984). These showings by the examiner
are an essential part of complying with the burden of presenting
a prima facie case of obviousness. Note In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 1 and 5, it is
basically the examiner’s position that Ichinose teaches all the
claimed features except for the location of the memory holding
the reference time codes being outside of the video signal
reproducing apparatus [answer, page 5]. The examiner concludes
that this difference between the claimed invention and Ichinose
would have been obvious to the artisan within the meaning of 35
U.S.C. § 103.
Appellant argues that the rejection fails to consider the
fact that Ichinose’s apparatus does not synchronize a time code
from a video tape recorder with that from an external reference
time code [brief, page 11]. The examiner responds that the time
code signals stored in RAM 58 of Ichinose are reference time code
signals. Ichinose compares the time codes of an incoming video
signal with time codes of video signals which have previously
been stored and displayed on Ichinose’s monitor 41. We agree
with appellant that there is no suggestion in Ichinose of
supplying a reference time code signal from outside of the
Appeal No. 95-2855
Application 08/075,338
11
reproducing apparatus. We also agree with appellant that the
obviousness of moving the location of RAM 58 has nothing to do
with the claimed invention.
Appellant also argues that Ichinose does not read video
signals from only one storage area of the memory means as recited
in claims 1 and 5. Ichinose stores the plurality of video
signals in “n” storage locations indicated as 25a to 25n. While
one of these storage locations is receiving a new frame of data,
all the other storage locations are read and the data is
transferred to monitor 41 [Ichinose, column 3]. The examiner has
looked at adjacent memory locations in Ichinose as making up a
plurality of memory areas [answer, pages 9-10]. Regardless of
how the examiner attempts to define a storage area, the claimed
requirement that readout be from only one storage area cannot be
met by Ichinose because Ichinose reads data from the memories 25
in a loop 25a, 25b, 25c,..., 25n, 25a, 25b,... in which the
beginning location of the loop keeps shifting with each new read
[column 3]. Thus, we agree with appellant that the reading
control means of claims 1 and 5 is not suggested by the Ichinose
device.
Since independent claims 1 and 5 recite features which
are not taught or suggested by Ichinose, we do not sustain the
Appeal No. 95-2855
Application 08/075,338
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rejection of these claims under 35 U.S.C. § 103. Although there
are several arguments in the briefs and the answers related to
the dependent claims, we will not consider these arguments since
our decision to reverse the rejection of claims 1 and 5
necessarily means that the rejection of the dependent claims must
also be reversed.
In summary, we have determined that the original
specification does provide support for the invention now being
claimed by appellant. We have also determined that Ichinose and
the level of skill in the art would not have suggested the
Appeal No. 95-2855
Application 08/075,338
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obviousness of the invention recited in claims 1-11.
Accordingly, the decision of the examiner rejecting claims 1-11
is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 95-2855
Application 08/075,338
14
Ronald P. Kananen, Esq.
Rader, Fishman & Grauer P.L.L.C.
1233 20th Street, NW
Suite 501
Washington, DC 20036